USPTO Patents Application 09842637

RESPONSE TO RESTRICTION REQUIREMENT
UtSt- Appln~.- No— 0 9/842^63-7 —

(b) fc trea ting ^ the resulting stationary phase culture
with at least \phe antibiotT^) at a concentration and for a time

sufficient to

bacteria) and selecting

phenotypically antibiotic -resistant subpopulation;

(ii) incubating a sample of said phenotypically antibiotic
resistant subpopu\tion with at least^one test^ compound or
agent ; and

(iii) assessing wiy antibacterial effects against said
phenotypically antibiotic resistant subpopulation; and
optionally)

(iv) isolating a compound or agent exhibiting antibacterial
activity.

Claim 10. (Amended) The \ method according to claim 9,
further comprising the step o%^ the identified agent

or compound. W— - ^

REMARKS

On page 2 of the Office Action, the Examiner issues a
Restriction Requirement under 35 U.S.C. § 121 to one of the
inventions of the following groups:

Group I

Group I I
Group III

Claims 1-7, . drawn ,to a method of
preparing _ antibiotic resistant
bacteria;

Claim 8, drawn to antibiotic resistant
bacteria;

Claim 9, drawn to a process for
assessing antibacterial activity of a
test compound;

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RESPONSE TO RESTRICTION REQUIREMENT
U.S.— Appln.— No. —09/84 2,6 37—— — — ~ —

Group IV - Claim 10, drawn to a process of making
an antibacterial agent by

amplification;

Group V - Claim 11, drawn to an antibacterial
agent against stationary phase
; bacteria;

Group VI - Claims 12-15 and 19, drawn to a

chemical compound and compositions
thereof having antibacterial activity
against antibiotic resistant bacteria;
and

Group VII - Claims 16-18, drawn to a method of
using an antibacterial agent.

The Examiner contends that restriction as between Groups I
and II is proper, since the product of Group II can be made by a
materially different process than recited in Group I, e.g., by
isolation of bacteria from hospital patients having nosocomial
infections .

Further, the Examiner states that restriction is proper
with respect to Groups II and III, since . the product of Group II
can be used in a materially different process than Group III,
e.g. , in a process for obtaining antibodies, or as a host cell
in a process involving the use of recombinant DNA or for the
production of single cell protein for nutritional
supplementation.

Moreover, the Examiner states that restriction is proper
with respect to Group IV/V and VII because the product of
Groups V and VI can be used in a materially different process

RESPONSE TO RESTRICTION REQUIREMENT
-UtS-— Appln— No v- 09/8 42 ,-637— _ — —

than Group VII, e.g., as a growth promoter in cattle or as a
fungicide or insecticide.

In addition, the Examiner states that restriction is proper
with respect to Groups IV and .V, since the product of Group V
can be made by a materially different process than recited in
Group IV, e.g., by chemical synthesis or by fermentation with a
suitable microorganism.

Accordingly, Applicants . hereby elect the invention of
Group III, i.e., Claim 9 without traverse and without prejudice
to pursue any of the non-elected claims, which are hereby
cancelled, in a Divisional Application (s) .

The Examiner is invited to contact the undersigned at his
Washington telephone number on any ques^iQns which might arise.

SUGHRUE MION, PLLC

2100 Pennsylvania Avenue, N.W.
Washington, D.C. 20037-3202
Te 1 ephone : (202) 293-7060
Facsimile: (202) 293-7860

Date: July 25, 2002

_ A-P-P~E-N-D-I -X — _

Marked-up Version of Amended Application

IN THE CLAIMS :

Claims 1, 8 and 11-19 are being cancelled.
The claims are amended as follows:

Claim 2 . (Amended) [A] The method as claimed in
claim [1] 9j_ wherein said [antibacterial agent] antibiotic is
selected from the group consisting of [ : ] rifampicin, kanamycin,
ampicillin and pyrazinamide .

Claim 3 . (Twice Amended) [A] The method as claimed in

claim; [1] 9, wherein said [antibacterial agent] antibiotic is
used at a concentration of 25 to 150/xg/ml with bacteria present
at a concentration of 10 5 to 10 9 bacteria/ml.

Claim 4. (Twice Amended) [A] The method as claimed -in

claim [1] 9, wherein/ said bacteria are selected from the group
consisting of Staphylococcus aureus, Escherichia coli t
Haemophilus influenzae, Streptococcus pyogenes, Streptococcus
gordonii [or] and Mycobacterium tuberculosis .

Claim 5. (Twice Amended) [A] The method as claimed in

claim [1] 9, wherein said bacteria are

Mycobacterium tuberculosis and said [antibacterial agent]
antibiotic is rifampicin.

Claim 6. (Twice Amended) [A] The method as claimed in

claim [1] 9, wherein said bacteria are Escherichia coli and said
[antibacterial agent] antibiotic is kanamycin.

Claim 7 . (Twice Amended) [A] The method as claimed in

claim [1] 9, wherein said bacteria are Staphylococcus aureus, and
said [antibacterial agent] antibiotic is ampicillin.

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"7™ Cla'im"*9" (Twice^Amended) A [process-] method — . — for_

assessing the antibacterial activity of a test compound or agent
or for isolating a compound or agent having antibacterial
activity against stationary phase bacteria comprising the steps
of :

(i) preparing a phenotypically antibiotic-resistant
subpopulation of stationary phase bacteria according to the
method [defined in claim 1] comprising at least the steps of :

(a) growing a bacterial culture - to stationary phase
to obtain a stationary phase culture; and

(b) treating the resulting stationary phase culture
with at least one antibiotic at a concentration and for a time
sufficient to kill growing bacteria, and selecting a
phenotypically antibiotic -resistant subpopulation ;

(ii) incubating a sample of said phenotypically antibiotic
resistant subpopulation with [one or more] at least one test
[compounds] compound or [agents] agent ; and

(iii) assessing any antibacterial effects against said
phenotypically antibiotic resistant subpopulation^ and
optionally

(iv) isolating a compound or agent exhibiting antibacterial
activity.

Claim 10. (Amended) [A] The method [process for preparing
an agent - -or compound having, antibacterial activity against
stationary phase bacteria wherein said agent identified]
according to [the process defined in] claim 9j_ [is amplified]
further comprising the step of amplifying the identified agent
or compound .

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